Telling a Story in Patent Drafting: Toot Your Horn, Cautiously

A bare-bones approach to patents has been proposed by some highly respected practitioners, an approach in which "unnecessary" elements of a patent such as a background section are eliminated in an effort to avoid some potential pitfalls that have been seen in litigation when the Federal Circut imported unintended limitations into the claims or took other steps that limited patent coverage. However, in light of KSR and other recent judicial trends, there may be a case for more story telling to create the case for non-obviousness. If the patent never gets allowed in the first place, making it less susceptible to judicial whims in litigation will do nothing for your patent. There are many pitfalls to avoid, but I believe story telling is now increasingly important to get the patent allowed and then to lay a foundation for others to understand it.

In fact, if your patent will be considered for licensing or sale, it makes a lot of sense to craft your patents with the marketing story in mind. Intellectual assets that harmonize with your marketing story can be especially valuable and helpful in closing deals. If your competitive advantage comes from a particular aspect of a method or product, is that aspect the focus of at least one patent? Does the story in the background section align with what you will one day be telling a client to interest them in the value of your estate?

I've seen some products that tout nanotechnology and boast of their patents, but the claims have nothing to do with nanotechnology. Shouldn't they at least have nanotech in some of the dependent claims? I've seen many patents where the invention is presented in a dry, straightforward way - almost as if the invention were an "obvious" and straightforward solution, albeit novel, to a known problem. That approach might not succeed anymore.

Many times the most clever part of an invention was the recognition of what the real problem was that needed to be solved. Once the problem is known, if the solution is pretty straightforward, the invention may face obvious challenges because an examiner is going to consider what was "obvious to try" for one of skill in the art facing the problem you have solved. If the problem statement involved discovery and surprising insights to even frame it in the first place, then tell that story. Make it clear that there was a process of discovery and surprise in even getting to the problem to be solved. That is a story you are going to need to tell to the Examiner sooner or later--might as well make it clear and hard to miss from the beginning.

Story telling is key in the art of persuading. Examiners enjoy a good story as much as anyone, and can sometimes better understand why an invention really is patentable when the story is told properly.

Toot your own horn, but carefully. Don't suggest that your invention is capable of all sorts of advantages in any way that might suggest that all of the advantages can be obtained in any one embodiment, for an infringer might escape if not all of your advantages are provided. Don't rely one or two versions or alternatives - give many to provide support for your broadest claims. Be very cautious about statements interpreting other patents or other prior art lest an mistake or overly critical statement come back to bite you. But don't be afraid to tell your story of discovery and adventure in bringing forth your product and overcoming the barriers that might have held back those of merely ordinary skill in the art.

Announcing "Got Invention Radio"

I've had the privilege of working with inventor, innovator, entrepreneur, and author Brian Fried on some of his patents. Very impressive inventor and businessman. I've watched with pride as he's worked to educate and inspire many inventors in New York and beyond. Now I'm delighted to share the news about a new radio program he is hosting to help innovators and inventors. Got Invention radio (see http://www.gotinvention.com) makes it debut this week. Here's an excerpt from a press release at BusinessWire:

Inventor and Author Brian Fried Launches Nationally Broadcasted Live Radio Show “Got Invention Radio” on November 19, 2009 for Inventors and Entrepreneurs on wsRadio.com

NEW YORK--(BUSINESS WIRE)--“Got Invention Radio,” a new live talk radio show for inventors, hosted by Brian Fried, to premier on wsradio.com on November 19th, 2009. Got Invention Radio, a prime time hour long show airs Thursdays at 8:00 p.m. ET/ 5:00 p.m. PT. The show will be available through wsradio.com, the leader in Internet talk radio and can be accessed though the www.gotinvention.com LISTEN LIVE button.

"People have so many great ideas and inventions but they're not sure what their next steps are or how to bring their product to market. That will be the focus of Got Invention Radio,” stated Fried. It was through writing the book "You & Your Big Ideas" (www.youandyourbigideas.com) and founding the Inventors and Entrepreneurs Club in Suffolk County, NY, that Brian first realized the lack of resources available to inventors to get the answers to their many questions. He continued, ”Got Invention Radio is going to be a great resource for today's inventors and want-to-be-inventors. They'll be able to gain the knowledge they need from well known inventors and other service professionals that can help to make the process easier and contribute to their success.”

Got Invention Radio has an impressive lineup of upcoming guests to be interviewed and featured, including Mike Drummond, Editor-in-Chief of Inventors Digest, the only print magazine for inventors, as well as AJ Khubani, the Founder/CEO of TeleBrands, one of the world’s top “As Seen on TV” products company and Louis Foreman, author of “The Independent Inventor’s Handbook”, CEO of Enventys, executive producer of Everyday Edisons; and co-founder of Edison Nation.

About Got Invention Radio

Got Invention Radio welcomes listeners to call-in during live broadcasts to ask the guest experts questions. All shows will be archived and will be podcasted via itunes. A resource link is available on the website to serve as an ongoing flow of information for inventors and new business owners. Join our community online at Linkedin, Twitter and Facebook.

Congratulations, Brian!

For Sharper Innovation, Focus Not on Ideas But on Unmet Needs

In response to a recent BusinessWeek article on generating creative ideas ("How to Produce Big Ideas on Demand"), one commenter, Larry McDonald, made a valuable albeit overstated observation about the problem with idea generation per se:

Ideas are the kiss of death, sadly. The fastest way to fail is to have ideas, instead of looking for unmet needs. If you must have ideas, the most critical issue is what you choose to have ideas about. Picking the right subject to innovate around should be half the task. Once you know the target of opportunity, only then think of solutions.

Ideas on their own can be a problem. They can distract and turn our focus away from the real needs in the marketplace. Too many inventions and patents represent clever concepts in search of a problem. Without being tied to meaningful unmet needs, the idea or invention, no matter how clever and interesting, is unlikely to become an innovation--something that changes the way people do things. The place to begin is not with lots of random ideas, but with understanding what people need and what problems they are facing, even if they can't recognize and express that problem.

The Dangers of Listening to Outsiders: The $1.26 Billion Dollar Judgment Against Pepsico

The press is focusing on the mistake of a busy secretary that led Pepsico to miss a court hearing, resulting in a $1.26 billion judgment against the company. Two men from my state of Wisconsin filed a suit claiming that Pepsico stole their trade secret idea for bottled water, obtained from them in a 1981 meeting, and then used that secret information to launch the profitable Aquafina bottled water business (over a decade later).

The legal notice to Pepsico was accidentally ignored by a busy secretary rushing to prepare for a board meeting. With Pepsico a no-show in court, the judge gave a default judgment in favor of the plaintiffs. Over a billion dollars! Ouch.

Pepsico is likely to be given a chance to defend itself after all, and I expect that they will prevail. In any case, there are several lessons here for companies. Apart from the obvious ones about keeping track of incoming documents and not overloading secretaries, I think this case points to the unfortunate risks that companies face in dealing with outside innovators for open innovation or partnerships. In many cases, outsiders feel that their idea--no matter how obvious, how unpatentable, or how well-known in the prior art--has been stolen, when in fact their idea got nowhere in the company or made no difference, and was either already known or independently conceived and developed. But claims of theft, even when highly implausible, can still result in much expense and pain for the company.

Here's some information from the Post-Crescent newspaper:

Charles Joyce, of Juneau, Wis., and James Voigt, of Cleveland, Wis., sued PepsiCo in April, asking for a jury trial and damages of more than $75,000. Their lawyer, David Van Dyke, told The Associated Press the two had worked together and came up with the idea to bottle purified water in individual servings.

Joyce's and Voigt's lawsuit accuses PepsiCo of misusing trade secrets. It also names Wis-Pak Inc. and Carolina Canners Inc., companies that make and distribute PepsiCo products, and Thomas M. Hiles, then the executive vice president of Carolina Canners. . . .

The pair claim they entered written confidentiality agreements about a new beverage they were calling "U.P." with executives of Wis-Pak and Carolina Canners in 1981. The executives violated the agreements and gave the information to PepsiCo, which eventually rolled out a bottled water brand — Aquafina — about a dozen years later, Joyce and Voigt claim. . . .

"The plaintiffs' claim — that in 1981, they gave someone other than PepsiCo an idea for a 'soft drink' and that somehow, 15 years later, PepsiCo used that alleged information to develop the Aquafina Water products — is completely dubious and without merit," [Pepsico spokesman Joe] Jacuzzi said.

Van Dyke, with the Chicago law firm Cassiday Schade, said he is drafting a response to PepsiCo's motion. He said he asked for $1.26 billion based on the revenue and profit PepsiCo has made from the Aquafina brand.

If the agreements were enforceable contracts, the plaintiffs may have a case, said Mark Leonard, a partner at Davis and Leonard LLP, in Sacramento, Calif., who focuses on intellectual property. Typically, patents are the best way to protect ideas, he said, but not everything can be patented.

"In the event it was not patentable, which would not surprise me, then the only way to protect that idea would be contractually," he said.

Readers may wish to review the history of bottled water on Google Answers and Nestle's 1200-year history of bottled water to realize, of course, that bottled water is not a recent invention. See also the history section of Wikipedia's entry on plastic bottles. Single-use plastic bottles for beverages didn't really become feasible and popular until the introduction of PET bottles in 1975, invented by invented by DuPont's Daniel C. Wyeth.

Back to the dangers of open innovation: so what is a company to do? First, many firms now require that innovations submitted to them be public information or even patented information only. In the case of business concepts or business models, information that the outsiders view as innovative may be presented during negotiations, often under confidentiality agreements. Consult your legal team for best practices in this area. Among practices that I've seen, the terms of a confidentiality agreement can require that the outside entity explicitly state what information is regarded as confidential to avoid future surprises, and a company can challenge potentially inappropriate or outrageous claims to prevent future misunderstanding. "Sorry, but the idea of putting water in small bottles and selling them is not yours." A company can also provide an internal firewall to keep potentially confidential information away from those that may be pursuing related paths in the corporation, but that take a lot of work and caution.

I've had numerous inventors claim that their ideas were stolen by a big company. In most of the cases, when I probe, there was little merit to the claims and often it seem that they may not have had anything real to steal in the first place. There are some cases where theft may have occurred, which is a subject for a later post and the subject of some sections in our recent book, Conquering Innovation Fatigue.

Inventors and innovators approaching companies must understand that part of the systematic reluctance to be exposed to outside ideas comes from the risk of facing expensive law suits based on questionable claims of theft, when in fact the ideas brought by the outsiders were obvious, well-known, or independently developed by the company. When you knock on their door, they see you through the "Lens of Risk" and not the rose-colored glasses you think they should use. They see risks, lawsuits, and defamation, not the billion-dollar opportunity you think you have created. That perspective needs to be understood if you are going to get anywhere with them.

The Future of Business Method and Software Patents? Keep Your Eyes on the Bilski Case

The pending Supreme Court case of Bilski v. Kappos may do much to clarify the role of "business method" and software patents in the U.S. The In re Bilski case added some new hurdles (offering the machine or transformation test as the test for patentability, not the less demanding test from State Street Bank v. Signature Financial Group), and that decision is now being appealed before the Supreme Court. PatentlyO summarizes the briefs being filed in support of the US Government's position. In discussing the Government's brief, PatentlyO also observes that the Government is taking an originalist position, seeking to apply what the framers of patent law in the 18th and 19th century intended regarding patentable material. Interesting! (And I thought originalist thinking was long dead in D.C.)

BusinessWeek Names 23 Masters of Innovation (Surprising Default from Two Companies)

BusinessWeek went to the twenty-five companies that topped its list of the most innovative (generally large) companies in the world, and asked them to nominate a leading innovator to be part of BusinessWeek's top 25 masters of innovation. None of these candidates carry the title of Chief Innovation Office. John Donovan of AT&T, for example, is the Chief Technology Officer, and a variety of other titles are represented.

What I found especially interesting was the lack of a nominee from Wal-Mart and Reliance Industries of India. In both cases, I can imagine that there were so many high-level people who could have been chosen that the company felt uncomfortable nominating just one. I hope that's the case. Wal-Mart is a surprisingly rich source of innovation in many areas, from their green initiatives to supply chain technology, from vendor relationships to their emerging private label strategy. And now they are taking on Amazon with Wal-mart Marketplace. Stay tuned! Reliance likewise is a highly innovative company with many key figures driving innovation. They have a Reliance Innovation Leadership Centre, a Corporate Research and Technology Centre, a Reliance Innovation Council, and many healthy partnerships that make the largest private sector company of India (and second largestprivate conglomerate in the world) highly productive and innovative. I can understand how difficult it would be to select just one innovation leader for BusinessWeek's award.

In any case, congratulations to each of the the top 25 companies and to all their masters of innovation!

Are You Neglecting the Power of Defensive Publications?

One of the most important lessons I learned about intellectual asset strategy during my time as Corporate Patent Strategist at Kimberly-Clark Corporation was the value of aggressive defensive publications. IBM, one of the world's leaders in extracting value from its patent estate, publishes about half of all its invention disclosures. One of my favorite IA strategists, John Cronin of ipCapital Group, taught us some of the reasons for IBM's aggressive publishing and some of the unexpected benefits of publishing. He was one of the drivers of IBM's early and successful efforts to generate revenue by licensing its estate. One of their early efforts involved a patent for a technology (scanning tunnelling microscope) where the value of a patent estate ended up being reduced by about 90% due to a group of minor improvement patents on top of the foundational IBM patent. Many of the improvements were things that IBM had thought of but didn't feel were worth the cost of additional patents. They realized that such improvements needed to be disclosed to create prior art that would stop others from getting patents for all those minor variations or minute improvements, thereby increasing the value of their own estate.

The IBM STM story is behind this passage from Richard Poynder's 2001 article, "On the Defensive about Invention":

As patenting strategies become more sophisticated, so the value of defensive publishing increases. It can, for instance, protect against picket-fencing - where competitors patent small incremental improvements in your patent in order to erode its value and enable them to license your technology on preferential terms.

In 1982, for instance, International Business Machines was granted a US patent for the scanning tunnelling microscope (STM) capable of imaging atomic details as small as 1/25th the diameter of a typical atom.

At first IBM dominated the STM field. By 1989, however, it had been picket-fenced by competitors.

"If IBM had published disclosures of all of the incremental innovation around their pioneering technology, they could have prevented others from picket-fencing them," says Tom Colson at IP.com. "They would, in effect, have taken full control of the technology without putting patent resources at risk."

Such blocking tactics can also be achieved by patenting the incremental improvements, but defensive publishing is significantly cheaper. "It costs $109 ( £75) per document to publish on IP.com," says Mr Colson. "This compares very favourably with the $20,000 it costs per patent application to file in key locations worldwide."

The price at IP.com has come up since then, but it's still an incredible bargain. For a very small fee, your document is almost instantly published and time stamped, archived, and made searchable by the PTO and other patent offices, providing a lasting and secure record that the information disclosed was part of the public domain at that time.

Some of you with corporate R&D or IP experience have faced the pain of seeing competitors get patents on things you had considered long ago but thought were too "obvious" or minor to be worth a patent. An important lesson from IP litigation is that even an invalid patent can still be a major headache, one that can cost millions. Much better to reduce the odds of such nuisance patents by creating a strong body of prior art that discloses bells and whistles as they come up and also discloses various combinations that competitors might be working on to reduce what they can patent in the fields important to you.

Publications need to be crafted for strategic purposes. There are quite a few issues to consider, such as how to get the internal review needed to avoid harmful disclosure, how to get them written, what kind of incentives to provide for inventors/authors, whether to publish anonymously or not, and what venues to use (IP.com is one of my favorite), etc. I'll be discussing some of these issues in the future, but feel free to give me a call if you'd like to learn more.

When Innovationedge helps a company strengthen their innovation strategy or IP strategy, defensive publications are usually one of the key topics we address. We find very few companies do anything serious in this effort, and many Legal Departments seem inherently geared to overlook the benefits that can be obtained with creative publications. That's understandable. The IP attorneys are all about IP, and publications don't fall into the "P" area of property. They are intellectual assets, however, that must not be neglected for cost-effective IP strategy.

Lessons from Magic and Innovation: Extracting Value from Inventions

As an amateur magician (one of my hobbies), I've tried to apply some magical concepts to the world of innovation and intellectual assets. Though I'm just learning how to work with video and Youtube, several of my attempts have been posted over at InnovationFatigue.com, the new blog supporting our new publication from John Wiley and Sons, Conquering Innovation Fatigue. Well, let's hope I improve with time.

Here's one example that might be helpful for some of you interested in the topic of bringing outside inventions and intellectual property to corporations.

The USPTO and the US Patent System: Great Reporting in the Milwaukee Journal Sentinel

(Cross-posted at InnovationFatigue.com, but with a different title.)

Those of you who follow me on Twitter may have seen a post last night pointing to a newly published resource about the US patent system from Wisconsin's leading newspaper, the Milwaukee Journal-Sentinel. In addition to a fascinating interactive resource at JSOnline.com, John Schmid and Ben Poston, two outstanding reporters, have prepared a valuable two-part series on the US Patent System. I've spoken with John recently and appreciate his genuine efforts to not only be fair, but to dig deep and understand complex issues. He and his co-author have obviously been burning the midnight oil to craft their series on the patent system and probe how some of the challenges in the US affect companies, universities, and entrepreneurs.

Their first article, "Patent backlog clogs recovery: Agency’s inability to keep pace undermines American innovation, competitiveness," raises some serious red flags about what is happening in the USPTO. It's not pointing fingers at the USPTO per se, but at the need for Congress and other elements of our government to do more to strengthen our patent system and US competitiveness. Here are some of their findings:

Amid the worst downturn since the Great Depression, the U.S. Patent and Trademark Office could be seen as a way to jump-start the economy. Instead, it sits on applications for years, placing inventors at risk of losing their ideas to savvy competitors at home and abroad.

The agency took 3.5 years, on average, for each patent it issued in 2008, a Journal Sentinel analysis of patent data shows. That's more than twice the agency's benchmark of 18 months to deal with a patent request.

The total number of applications waiting for approval, more than 1.2 million, nearly tripled from 10 years earlier.

The Journal Sentinel also found:

• Under a practice that Congress authorized a decade ago, the Patent Office publishes applications on its Web site 18 months after the inventor files them, outlining each innovation in detail regardless of whether an examiner has begun considering the application. The system invites competitors anywhere in the world to steal ideas. [Update: Actually, if the patent is filed in the US only, it is possible to request nonpublication, in which case the invention isn't public knowledge until it is issued as a patent.]

• For more than a dozen years starting in 1992, Congress siphoned off a total of $752 million in fees from the Patent Office to pay for unrelated federal projects, decimating the agency's ability to hire and train new examiners.

• As its backlog grew, the Patent Office began rejecting applications at an unprecedented pace. Where seven of 10 applications led to patents less than a decade ago, fewer than half are approved today - a shift that a federal appeals judge termed "suspicious." The same judge calls the agency "practically dysfunctional."

• Staff turnover has become epidemic. Experts say it takes at least three years for a patent examiner to gain competence, and yet one examiner has been quitting on average for every two the agency hires.

• Patent activity, a widely accepted barometer of innovation, is showing exponential growth in increasingly competitive economies such as China, South Korea and India. As developing economies strive to commercialize and protect their technologies throughout the world, they add tremendously to the U.S. Patent Office's workload.

• In many cases, applications languish so long that the technology they seek to protect becomes obsolete, or a product loses the interest of investors who could give it a chance at commercial success. "Patents are becoming commercially irrelevant to product life cycles," said John White, a patent attorney and former examiner.

For an American start-up company, a patent application is often the only asset, which creates a Catch-22: Start-ups often need a patent in order to get funding; yet without that funding, entrepreneurs can't afford the mounting fees and legal costs to keep the patent application alive or to fend off infringers.

The article continues with a look at the impact of these problems on several Wisconsin companies.

Part 2 of the series is "Patent rejections soar as pressure on agency rises: Penalized for flawed approvals, examiners keep pace – and pay – by refusing applications." This deals with the increasing barriers to allowance and the loss of morale among many seeking patent protection. Here's an excerpt:

After consistently rejecting applications at a rate of about 35% since 1975, the Patent Office — faced with a growing backlog — underwent a convulsive shift around 2004 and now turns down well over half. In the quarter that ended June 30, it denied more than 59%.

Critics contend the agency’s efforts to catch up with the burgeoning backlog have only made things worse. At the same time, the number of appeals filed by rejected applicants such as Mertz has skyrocketed, further clogging the system.

The agency has become “practically dysfunctional,” says Paul Michel, chief justice of the Court of Appeals for the Federal Circuit, the branch that handles the nation’s patent cases.

“Innovation is supposed to get us out of this economic crisis,” said patent attorney Teresa Welch, who works in the Madison office of Michael Best & Friedrich. “But if the Patent Office is not issuing patents — and they’re not — it’s not going to happen.”

The Patent Office contends that more patent applications are being rejected these days because more deserve to be rejected. Patent Commissioner John Doll, who started as a patent examiner in 1974 and served as the agency’s acting director from January to August this year, proudly spent the past two years showing off a chart depicting the declining allowance rate — the percentage of applications that are granted as patents — as he made public appearances.

As one who has faced some arguably unreasonable rejections and lengthy delays in obtaining patents, I can sympathize with these frustrations. Of course, every patent applicant believes they have an allowable application and will feel that a rejection is unfair and harmful to the business opportunity they are pursuing. It may be that the higher rejection rate does not reflect a serious drop in the quality of applications but may at least partially reflect internal pressures of an overwhelmed and under-funded USPTO, but rejections per se are not a problem.

I would suggest that we should also remember that each allowed patent affects more than just the patentee. A patent can shut down competing businesses or squelch entrepreneurial plans. It is right that the original, true inventor should have some protection for unique intellectual property that he or she developed. But when a patent is allowed for something that is not novel or truly is obvious, then that which should have been part of the public domain may be removed and capricious barriers to business success may be imposed that can actually hurt innovation in the long run. In our book, Conquering Innovation Fatigue, we support protection of property rights and advocate a strong patent system, but we also dedicate an entire chapter to a case study of the harms that ensue when a bad patent is issued. In the case we explore, an innovative Wisconsin sprout farmer nearly lost his entire business because of a clearly questionable patent from Johns Hopkins University. In spite of "slam dunk" prior art, it still took five years and most of the retirement funds for our local innovator to stand against the high-paid team of lawyers from a powerful university and prevail. The balance between allowing valid patents and not allowing invalid patents is a delicate one that requires caution. Not just caution, but plenty of time and resources for careful examination and highly skilled examiners.

One interesting step for improved and accelerated examination, which we discuss in our book, is the Peer to Patent pilot program with the USPTO. My experience with my own patent for a security system was remarkably positive. Got an excellent examination and rapid allowance of the software/business method patent, shaving years off the normal examination time. I hope that Peer to Patent continues to expand. Meanwhile, I agree with the gist of what John Schmid and Ben Poston are saying: we need to strengthen our US patent system to reduce the backlog, maintain high quality, and promote sound intellectual property rights in the US. Easy to say, but carrying that out is a remarkably difficult task.

Microsoft Loses Patent Infringement Suit over XML

Breaking news: Yesterday, Aug. 12, Microsoft was found to infringe U.S. Patent 5,787,449, "Method and system for manipulating the architecture and the content of a document separately from each other." The patent describes a method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations. The system includes a map of metacodes in the document and is said to provide for multiple views of the same content, the ability to work solely on structure and solely on content, storage efficiency of multiple versions, and efficiency of operation. And all that boils down to XML. This may have even bigger implications, according to a CNET report, "Microsoft's 'Custom XML' patent suit could put ODF at risk":

The infamous U.S. District Court for the Eastern District of Texas has slapped Microsoft with a permanent injunction that "prohibits Microsoft from selling or importing to the United States any Microsoft Word products that have the capability of opening .XML, .DOCX or DOCM files (XML files) containing custom XML," according to CNET. This likely won't stop Microsoft Office from shipping, as CNET's Ina Fried writes, but the bigger question may be whether the lawsuit will reach beyond Redmond to also threaten the Open Document Format (ODF).

CNET also quotes Gartner analyst Brian Prentice about the patent itself:

I think this one might actually have some legs. Keep in mind is that this claim was filed back in 1994. The claim considers the existing state of the art at that time....

One thing seems clear to me - this is not a typical rubbish software patent that earns its filer a 20 year monopoly on the dead obvious. Fifteen years ago this would seem to me to have been an innovative idea....

The litigant, "i4i", is being was awarded $200 million in compensatory and $40 million punitive damages. For further details, see PatentlyO and Prima Facie News.

Microsoft has 60 days to comply. If things change, they will have to quit selling Microsoft Word or change it to remove or modify the current .docx format, perhaps using a patch to take out the infringing features. As Dennis Couch at PatentlyO observes, they could also buy the patent, but it's going to cost a lot more now than it did in 2007.

This case will be used to bemoan software patents and suggest that patents are a bad thing. Some patents are bad and should never have been issued. But assuming this is a valid and reasonable patent, then I would say no, it's not patents that are bad. It's infringing and ignoring other people's valid intellectual property that is bad. Not to mention dangerous and costly.

Patent Reform Risks: Consider the Voice of the Innovator

In the current efforts to bring "patent reform" to the United States, the voices of several loud and powerful groups appear to have much sway. Some of the most controversial aspects of the pending bills on patent reform appear well suited for aiding large companies who find patents (of others) to be costly nuisances. The proposed reforms will reduce potential damages for infringement and, through expanded third party challenges, post-grant review, and other provisions, make it more difficult and costly to obtain a patent. Changes in assessing damages may make it harder to benefit from a patent. Inventor rights might be diminished, one can argue, by giving patent rights to the first party to file rather than the original inventor.

The frustrations of Apple, IBM, and other large companies deserve some sympathy and attention, but the risk is that the most important engines of future innovation and business growth will be ignored. The next Steve Jobs may be a graduate student right now, and the leaders of the next wave of transformative innovation may be small entrepreneurs in fragile start-ups struggling to hold their own against well-funded incumbents. Who is listening to the voice of the innovators to come? Who is listening to the voice of innovators in small companies or lone inventors, frustrated over the unnecessary barriers to obtaining patent protection and the decreasing value and increasing uncertainty of patents?

Patents are the great equalizer. They give a lone inventor with a valuable innovation the chance to hold on to his or her intellectual property and profit from it, rather than having it usurped by more powerful forces. The temptation to take and exploit others' property is almost irresistible, when it can be done with impunity. Patents are the equalizer that can allow an incipient company to flourish. Who is listening to the voice of these small but important innovators who will shape the future? They don't have rich lobbyists now, so will they be ignored?

We must not make massive changes to the US Patent System that might weaken patent rights for small innovators unless we carefully understand what the impact on them will be, and determine how their needs and rights can be protected.

Consider one controversial aspect of proposed reform legislation, post-grant reviews. Once a patent has been issued in the current system, there is a presumption of validity and while the patent can be challenged in a re-examination proceeding or invalidated in litigation, the opportunities to attack a granted patent are strictly but reasonably limited. In the proposed legislation, the US system would be made more like the European system, where challenges to issued patents can add years of delay and heavy costs on the patent applicant. This system, in my opinion, can make life difficult for lone inventors and small, struggling companies seeking to use patents to gain a foothold against powerful incumbents. Dr. Scott Shane, a professor of economics at Case Western University, has written a paper examining the impact of the post-grant provisions in the legislation (PDF file). Here is an excerpt from his overview:

In the last Congress, both the House and Senate considered legislation to create a post grant review process lasting the life of the patent as part of the Patent Reform Act of 2007. A revised version was passed by the House of Representatives in September 2007.

In April 2009, the Senate Judiciary Committee reported the Patent Reform Act of 2009, which contained identical language on post grant review to that contained in the House passed bill of 2007. The language in the Senate Patent Reform Act of 2009 would create a 12-month post grant review period and expand the existing inter partes reexamination in a fashion that, together, would be similar to the European system of post grant opposition.

The purpose of this report is to outline the likely effects of the 2009 Senate legislative proposal. Contrary to the arguments made by proponents of the legislation, this expansion of administrative processes for challenging patent validity would likely have several adverse effects, including the following:

1. Increasing the length of patent pendency;
2. Creating uncertainty about patent validity;
3. Decreasing the disclosure of knowledge necessary for innovation;
4. Increasing the costs of achieving patent validation;
5. Reducing investment in R&D;
6. Hindering efforts of U.S. universities to transfer their inventions to the private sector; and
7. Increasing strategic patenting behavior by large, established firms.

Moreover, the proposed legislation will not have many of the beneficial effects the proponents of the legislation claim it will have. In particular, the proposed legislation:

1. Will not improve patent quality;
2. Will not reduce the cost of patent litigation; and
3. Will not speed the determination of patent validity.

If he is right, these are serious issue that will have an especially severe impact on small inventors and start-ups, which may beneficial to the large companies who are annoyed by those who are sometimes inappropriately called "trolls." But what will the impact be on innovation?

The United States patent system has its problems, but the fundamental premise of protecting the rights of actual inventors (rather than the first to file) and the favorable protection of property rights (including intellectual property) in this country is arguably one of the very keys to the economic miracle of the United States. The rush to make our country "more like the rest of the world" is not necessarily the wisest path. Perhaps it should be the other way around. I believe we will see economic prosperity grow in those nations like China that are working to strengthen inventor rights, not weaken them.

The problems we do have can be addressed in other less radical means. Given the anti-property rights mentality of so many in power today, I do not trust that the outcome of "patent reform" will protect property rights as well as the current system, especially if the voice of the innovator is overlooked. Unintended consequences on innovation in this country may be severe.

One can argue that some of the problems the reform legislation seeks to fix have already been largely resolved in the courts, or are minor issues not worth the price of the cure. Some aspects of the legislation are healthy, but the problems cannot be overlooked.

Useful related reading: "How President Obama Can Restore Our Patent System" by Robert W. Fieseler.

Inventions Ahead of Their Time

One of my painful experiences in the pursuit of patents at past employers and on my own has been unexpected encounters with prior art. Even after serious and careful searching, one may later find that someone else pursued a very similar idea many years ago. Like the Good Book says, there is no truly novel thing under the sun, though there may be many nonobvious improvements thereof.

A great example of this is the iPod, a terrific innovation that may have been anticipated to some degree in 1979. "Suspiciously Prescient Man Files Patent for iPod-Like Device in 1979" is Dan Nosowitz's recent post at Gizmodo pointing out how an old, expired patent hinted at several aspects of the iPod. Of course, music players and MP3s were already around when the iPod came out, but the 1979 data is rather surprising. That patent may have had some great concepts, but like many inventive concepts, it may have been too early to be practical and successful. Timing is so important for success in innovation: is the market ready, is the supply chain available, is there an ecosystem that can be tapped, can the concept stick and resonate with other innovations, and can it be offered economically?

Consideration of the market roadmap for a prospective innovation can be critical for success. Many times suceess requires adjusting the business model to find the resonances that can add energy to the offering and to find ways to present the innovation in a disruptive manner rather than going head-on against established incumbents. Innovation is often more about the business model and marketing plan than it is about the technology itself. The iTunes model was part of what made the iPod a winner. 1979 was the wrong digital era for that invention.

A hat tip to RobMcNealy on Twitter for a mention of the Gizmodo article.

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Update: An example of an invention ahead o fits time was the photophone of Alexander Graham Bell. About.com's article on Mr. Bell explains:

Among one of his first innovations after the telephone was the "photophone," a device that enabled sound to be transmitted on a beam of light. Bell and his assistant, Charles Sumner Tainter, developed the photophone using a sensitive selenium crystal and a mirror that would vibrate in response to a sound. In 1881, they successfully sent a photophone message over 200 yards from one building to another. Bell regarded the photophone as "the greatest invention I have ever made; greater than the telephone." Alexander Graham Bell's invention reveals the principle upon which today's laser and fiber optic communication systems are founded, though it would take the development of several modern technologies to realize it fully.

Cai Lun (蔡伦) and the Ancient Chinese Invention of Paper: Lessons for Modern Innovators

Among the many inventions that came from ancient China, four in particular have been given attention for their impact on the modern world. Known today as the “Four Great Inventions” (四大发明; or “si da fa ming”), they are:

1. The Compass
2. Gunpowder
3. Papermaking
4. Printing

Who can overestimate the profound impact of the last two intertwined inventions on our world today? But providing the proper credit for these ancient inventions is a difficult task. Today, though, I wish to honor the Chinese innovation of paper by giving attention to one of its foremost ancient champions.

As Dard Hunter wrote in his classic book on the history of paper (Papermaking: The History and Technique of an Ancient Craft, New York: Alfred A Knopf, 1943), the development of most crafts, including papermaking, are enshrouded in mystery. Nevertheless, the best information we have points to a servant of the Chinese imperial court, a eunuch named Cai Lun (sometimes spelled Ts’ai Lun), as the man who should be or at least can be credited with the innovation of paper in 105 A.D. This was during the height of the Han Dynasty (202 BC-AD 220, more specifically the Eastern Han Dynasty, AD 25–220), one of several golden eras of Chinese history.

I choose my words carefully when I speak of the innovation and not necessarily the invention of paper. The invention–the original creation of a web made from macerated, individual fibers laid down in a slurry on a porous support such as a wire or cloth–may have been by someone else. There is archaeological evidence of paper made from hemp decades earlier, and there is the probability that in Cai Lun’s day, others working for him devised or improved the papermaking process that has long been associated with his name. But Cai Lun took paper beyond being a technical invention and helped drive its widespread adoption such that it became a successful innovation, one that would stick and change the world for centuries to come.

The history of innovation teaches us that a single inventor is rarely responsible for a noteworthy invention, especially one that dramatically changes the world for good. A long list of people may have contributed knowledge and advances to the creation of paper in Cai Lun’s day, with many thousands having done the same since his time to give us the brilliant spectrum of products and processes we now know.

In the fifth century, the Chinese scholar Fan Ye credited Cai Lun (蔡伦) with the discovery of paper in his official history of the Han Dynasty. He writes that Cai Lun, a highly regarded eunuch in the Imperial Court, applied his talents to solve the problem of making writing more convenient. Writing and inscriptions were done on bamboo or silk strips, but these were not convenient materials to work with and silk was costly. Fan Ye credits Cai Lun with having “conceived the idea of making paper from the bark of trees, hemp waste, old rags, and fish nets.” Perhaps he was the originator, the one who conceived of and invented paper, or rather, reinvented or improved what others had tried earlier. Perhaps he had a vision for improving a prototype material and the method of making it, and gave directions to his staff for the trials to run to obtain breakthrough improvement. In any case, Fan Ye indicates that he and his crew conducted research on this topic, made significant advances, and then, importantly, made a report to the Emperor that was highly regarded and gained support.

The China Internet Information Center (China.Org.Cn) reports that when Cai Lun presented his first batch of paper to the Han emperor, the emperor was so delighted that he named the material “Marquis Cai’s paper.” In 1974, archaeologists found Eastern Han Dynasty paper found in Wuwei with written words that were still clearly decipherable. “Thin, soft, and with a smooth finish and tight texture, this paper is the most refined and oldest paper discovered to date.” [This may exclude some older cruder specimens.]

In addition to Cai Lun’s technical advances, his report to the Emperor may have been a crucial step in driving the social adoption of paper, resulting in its widespread use. According to Fan Ye, after he submitted his work to the Emperor, he “received praise for his ability. From this time, paper has been in use everywhere and is universally called 'the paper of Marquis Cai.” Paper was about to become more than a rare find in future archaeological digs, but a universally used medium that would change the world for centuries, even millennia to come.

Many inventions wither away into obscurity and fail to become lasting innovations until the right person with the right vision, means, and connections comes along and breathes life and fullness into the concept. Cai Lun, with access to the Emperor, with a vision of the potential of the invention, and with the credibility and track record to make a report that would gain imperial attention and support, was such a man. It is Cai Lun whom we can properly credit for successfully driving the innovation of paper into ancient Chinese and ultimately world history, regardless of how much of the actual inventing was done by him.

Cai Lun was born in Guiyang (modern day Leiyang). He served as a court eunuch since AD 75, was then promoted several during the time of Emperor He of the Han Dynasty. Around AD 97, he would distinguish himself and his men through his highly skilled work in producing swords and other weapons that served as models for future weapons production.

After his success with paper, he was praised and rewarded with the taxes from three hundred dwellings and became a chief in the palace. He was also trusted in correcting some important written histories.

Unfortunately, Cai Lun became involved in imperial intrigue, assisting the Empress in dealing with a romantic rival for the Emperor’s attention. When power shifted in AD 121, he was called to be judged for his role. Rather than appear for judgment, Cai Lun bathed, dressed in his finest robes, and then drank poison, ending the life of the great innovator whom we can honor for one of the most important inventions in the history of civilization.

Our Book Is Out: Conquering Innovation Fatigue, Published by John Wiley and Sons

I'm happy to announce that our book on innovation, intellectual asset strategy, and entrepreneurship is hot off the presses at John Wiley and Sons, the publisher that was my first choice for Conquering Innovation Fatigue. Cheryl Perkins, CEO of Innovationedge and named by BusinessWeek in 2006 as one of the world's "Top 25 Champions of Innovation," is a co-author, along with Mukund Karanjikar, an innovator who was with Chevron Energy Ventures when we began developing this book in 2006 and now is a consultant in Salt Lake City with Technology Holding LLC.

I just received my first printed copy of the book. It's so nice to have the tangible product in hand after this three-year journey leading to the book in print. Whew! Was much more challenging than I thought.

Conquering Innovation Fatigue focuses on the personal side of innovation and reveals the often unseen "innovation fatigue factors" that can shut down innovation. It's written for entrepreneurs, business leaders, inventors, and even government officials, showing these unseen and often unintended barriers and revealing how they can be overcome.

Throughout the book there is a focus on intangibles such as the trust between an innovator and an employer that can be easily destroyed through a variety of corporate actions, resulting in an invisible innovation killer. See our chapter on "Breaking the Will to Share." We give a plug for Value Network Analysis (with a hat tip to Verna Allee of ValueNetworks.com) and are informed by the VNA mindset in many of the issues we explore as we consider the personal side of innovation.

Visualizing the Unseen: Powerful Tools in Innovation

An exciting development in materials science is a new class of polymers that change color when under stress. The American Chemical Society recently highlighted the work of Dr. Nancy R. Sottos at the University of Illinois, Urbana-Champaign, who spearheaded the research that provided the first solid polymers that change color as a function of stress. This provides an important new tool in visualizing what is happening when materials fail and deform. Tools that make the unseen visible often opens up progress in many other areas. The ACS article on this work gives a hint at some of the advances that may follow:

"These polymers are extremely interesting to materials scientists since they combine photo-, thermo-, and mechanochromic properties into a single system," comments Stephen H. Foulger, a materials science professor at Clemson University, in South Carolina. "These properties, coupled with the fact that the color change can be maintained with the cessation of stress, can be exploited by engineers in the design of polymeric components that visually indicate to the end-user their stress, strain, thermal, or ultraviolet-visible light exposure history. It's a true smart material," he says.

Sottos tells C&EN that the work demonstrates the concept that mechanical force can trigger the activation of specific covalent bonds in a polymer. She hopes to develop new mechanophores that do more than just change color. For example, molecules that cross-link or polymerize in response to mechanical stress could lead to self-toughening or self-healing materials, she says.

Polymers and material science are not the only place where progress occurs when that which was long invisible can now be seen. Innovation is possible in how we do business or run an organization when we apply new tools to track and observe the typically invisible flow of intangibles in the value network or ecosystem of the organization. These intangible include the sharing of knowledge, the communication and relationship building activities that occur in transactions between individuals that aren't described by looking at tangibles like the flow of goods, services, and money in the value chain, the visible things that are normally observed in business and organizations. Much of the performance of an organization depends on the hard-to-see intangibles that create the knowledge, loyalty, trust, and relationships that are often the primary engines for business health and success.

Intangibles can be visualized, at least to some degree, using Value Network Analysis and related tools. By considering and searching for the nature of the human-to-human transactions of intangibles and mapping these, visualized organizational characteristics can do much to help analysts understand strengths and weakness of an organization, and point to areas where improvement is needed.

If you're not considering both tangibles and intangibles in your business, if you haven't mapped out your ecosystem to understand how your organization works, then you may benefit from Value Network Analysis, which is one of the services that Innovationedge and its associates can provide for your organization.

Practice Tip for Preparing Information Disclosure Statements (PTO Form SB08a)

For those of you who file patents electronically or simply use the PTO's online forms in filing and prosecuting patents, you may have experienced some problems in the past with PDF forms that couldn't be saved. Many of these forms have now been improved, so recent versions may let you save information. But there are still some pitfalls. For example, the other day I was preparing an Information Disclosure Statement (IDS) for a client using the PDF form that pops up from the PTO forms page when you click on the link labeled "SB08a EFS-WEB," a form intended for online filing. Clicking on it opens the PDF file directly in your browser. TIP: save it as a PDF file and open it outside your browser with Adobe Acrobat. If you fill it out directly in the browser, I've found that the backspace key occasionally gets interpreted as a back-arrow click (in Firefox 3, anyway) that takes the browser to the previous URL, causing total loss of all the unsaved data in your PDF file. Aggravating.

Save, open with Acrobat, edit, and repeatedly save while editing with a simple Control-S.

Business Method Patents: Is Your Company (Or Nation) Missing an Opportunity?

While some have feared that business method patents have become dead in the US after In Re Bilski and other challenges, these appear to be either minor irritants or even wholesome corrections, leaving very real opportunities for those who innovate in business methods. Are you missing out? Is your field of business, or even nation?

IPFrontline has an excellent article from May 22 on business method patents. Patent Protection and Financial Institutions by Alexandra Daoud, Malcolm McLeod, and Mitchell Wolfe shows that US financial institutions have been aggressive in pursuing patents in the United States as well as in Canada, where many of our institutions also have operations. On the other hand, Canadian financial institutions, many with operations on both sides of the border, have filed far less. Many significant Canadian institutions have filed nothing in the US or Canada, and even the leaders have only filed a tiny handful. Clearly, Canadian businessmen in that sector don't see the same opportunities that their US counterparts do. Could it be that a lack of awareness is costing them an important opportunity to protect their intellectual assets?

How is your business or sector of the economy doing in its IP strategy? Are you focused on traditional patents for gadgets and the methods of making them? Do you recognize that much of the innovation that drives the economy involves how we do business, what we do with data, how we manage relationships, and how we interact with partners and customers? If that is where much of the most valuable innovation is found in your area, what are you doing to protect it? Isn't it time to get more aggressive about non-traditional patents, including business method patents?

When I was Corporate Patent Strategist at Kimberly-Clark Corporation, one of my most exciting initiatives was introducing a formal effort to pursue business method patents. K-C was a world leader in some of its methods. By creating a Cross-Sector Business Method Group, we were able to educate teams across the Corporation about the opportunities and help many previously unheralded inventors recognize that they were in fact creating patentable material. We helped many of them gain recognition and file valuable patent application, including applications in RFID, marketing, inventory management, spare parts, logistics, relationship management, etc. It was one of the most exciting aspects of my work there. Pursuing opportunities of this nature requires a lot of evangelism and education. It also requires some serious grunt work as you help teams scour their work and figure out where inventions can be found and protected. But these efforts can do a lot of good, if you have the right support from management and Legal.

The Pitfalls of Sexy Innovation

In his blog on customer strategy, Curtis Bingham has a great post warning companies about the folly of always looking for the "sexy" customer. I'd like to build on that with a note about innovation: companies can miss many opportunities by focusing on what is hot and exciting, while missing what can be done with "mundane" innovations that deliver on unmet needs in simple, low-tech ways.

Innovation doesn't have to involve the latest high-tech tools to deliver value. In fact, sexy tech can easily become failed tech. Look for innovation across your supply chain, in packaging, in your relationships with suppliers, etc. Blockbuster innovation can be simple and low-tech. Look at the rise of private brands in the retail market. Simple, low-cost, but huge advances have occurred behind the scenes to make these concepts work.

Innovation in Sound Masking: Toward a Cone of Silence

In "'Cone of Silence' Keeps Conversations Secret" at New Scientist, Paul Marks describes a recent MIT invention of a system that can direct noise toward nearby people to make it difficult to overhear a private conversation. It's a step toward a functioning version of the "Cone of Silence" from Get Smart. The MIT system, however, demands a lot of infrastructure. Many sensors and sound generators are required to do its subtle work. Will it have market potential, given that simple and relatively effective solutions are out there already? One example is the sound masking technology of Logison near Montreal, Canada. They offer more sophistication and control than generic white noise generators, but in a simple and easy to use system. Who will prevail in the long run? The MIT system certainly has the potential to offer more targeted masking, but unless the complex system can be offered in easy-to-install plug-and-play formats, it may never make more than a whisper in the market, though it may become a preferred tool for a few high-end users.

The key to successful innovation is rarely coming up with the highest performance in a product. The real key is providing a product that can be socially adopted - meaning that it positively changes the way people do things, and drives others to adopt it. The social aspect of innovation can never be neglected. This demands attention to industrial design, to ease of use, to convenience, to cost, to service and repair, etc. These factors help drive social adoption. It's not all about bells and whistles. I hope the MIT product will become reality and succeed, but at the moment, I think lower-tech solutions will prevail unless the design and business model aspects for the MIT invention can be pursued to deliver successful social adoption.

Innovation: It's for Cities, Too

Innovation is not just for new products and growing companies. Innovation in the way things are done is essential for many aspects of life - how we play, how we live, how organizations work, and even how cities function. Andrew Spiegel's blog has an insightful essay, "Pittsburgh’s Renaissance Holds Lesson for Cleveland," which reminds us of the need for innovation strategy when it comes to government and urban life. Pittsburgh has been through tough times, but like many wise organizations, is acting now to build for the future--and appears to be creating something of a boom in the process. We hope the innovation energy can be maintained as they further develop new models and encourage growth in a diverse array of economic sectors. Sometimes the places that are hardest hit in an economic downturn can become engines of great future growth and innovation, when there is vision and courage.

Silver Nanopartciles in an Antibacterial Film from ETH in Switzerland

The Functional Materials Laboratory Blog from ETH in Switzerland offers an interesting video featuring some of the work of a chemical engineer I met a few years ago, Dr. Wendelin Jan Stark. A calcium salt is heated with silver nanoparticles to form particles that are highly lethal to bacteria and capable of being applied to polymer films. Good synergy between the two components. Many interesting innovation opportunities.

The real reason I'm sharing this video from the Swiss TV channel, SF1, is that it has a delightful mix of High German and Swiss German in a single program. It begins with Swiss German, and later Dr. Stark also speaks Swiss German. Having spent two wonderful years in Switzerland, this was truly enjoyable. Hope you can appreciate the unique flavors of the two dialects, even if you don't speak German. The Swiss are rightfully proud of this "Erfindig us dr Schwiiz."



Sorry, this is in German/Swiss German only.

Blackwell's Espresso Book Machine: A Disruptive Innovation in the Printing of Books?

The English company Blackwell has demonstrated a revolutionary machine that can print and dispense a single book on demand in about 5 minutes, selected from many thousands of possibilities. It's like an ATM for books. News comes from a story at FastThinking.com:

Blackwell believes the introduction signals the end to the frustration of being told a title is out of print or not in stock. The Espresso offers access to almost half a million books, from a facsimile of Lewis Carroll's original manuscript for Alice in Wonderland to Mrs Beeton's Book of Needlework.

The company hopes to increase the catalogue to more than a million titles by the end of the summer, the equivalent of 23.6 miles of shelf space or more than 50 bookshops rolled into one. The majority of these books are out of copyright, but Blackwell is working with UK publishers to increase access to in-copyright writing. So far the response has been overwhelmingly positive, the firm says.

"This could change bookselling fundamentally," said Blackwell's chief executive, Andrew Hutchings. "It's giving the chance for smaller locations, independent booksellers, to have the opportunity to truly compete with big stock-holding shops and Amazon ... I like to think of it as the revitalisation of the local bookshop industry. If you could walk into a local bookshop and have access to one million titles, that's pretty compelling."

Amazon.com and other services have already provided the disruptive benefit of consumer convenience in ordering and the ability to choose from vast numbers of titles. Now the added convenience of getting the book in a few minutes instead of several days could add disruptive potential to this innovation.

Before Amazon or other booksellers begin to worry, though, there are some limitations that may keep the product at the curiosity level rather than mushrooming to disruptive status. People still need to be physically present at the machine. Five minutes for a book isn't long, but it is when there are three people ahead of you in line. I haven't seen the printed product, but it may lack some of the pizazz (4-color dust jacket, quality of the paper and binding, etc.) that people value in a printed book. Will it really meet the needs of non-users or low-end market segments? Maybe not when the premium price for the on-demand books is considered. Much depends on the execution and the details of the business model. Given the premature hype about this being the biggest revolution since Gutenberg, I suspect it will fall into the category of the Segway. Great innovation, but not yet poised for disruptive dominance.

The ParaJet SkyCar: Potential Disruptive Innovation?

The British company, Parajet, has developed the Parajet Skycar, a flying car running on biofuel (ethanol or biodiesel). It is is currently a prototype that has been the subject of dramatic demonstrations, such as flying over the Sahara (from France to Timbuktu) and over the Amazon rain forest. This high-efficiency, eco-friendly flying car differs sibstantially from previous attempts to add collapsible wings to automobiles or to modify winged aircraft to be suitable for ground driving. Instead of using solid wings, the Parajet is essentially a powered parachute. It uses a paramotor and a parafoil attached to what looks like a dune buggy, but one that can achieve sustained level flight.

The parafoil can fold up and fit in the trunk of the vehicle. Converting from an on-ground vehicle to a flying car takes about 3 minutes. Not bad! Safety is a big plus. If the engine fails, the vehicle can slowly glide back to the ground. If the canopy rips, there is an emergency reserve ballistic parachute that can be deployed. The prototype is said to be fully road-legal.

FutureCars.com has a great review of the car. They like it, but want a better design. The current dune-buggy design is not likely to be a hit, but their next generation body will be more stylish. There have been numerous attempts in the past to make small airplanes for personal flight, including ones that can serve as automobiles as well. The breakthrough is using a paramotor and parafoil (essentially a powered parachute) for that purpose.

In my opinion, this has the potential to be a disruptive innovation in the classical sense of the term as taught by Clayton Christensen of the Harvard School of Business. It is an innovation that is "worse" in terms of standard metrics and the expectations of the market that the established incumbents are trying to meet - such as high speed and the full control offered by winged aircraft - while offering new levels of convenience and ease of use. Yes, a parafoil can't perform anywhere close to a winged aircraft in terms of pilot control and speed, but it is easy, stable, safe, and can meet the needs of low-end users and many non-users. The incumbents in both automobiles and airplanes will not be threatened by this at first and will have neither motivation nor capability to respond, making it possible for this innovation to get off the ground, so to speak, without significant head-to-head competition in its area, assuming that they have adequately handled the intellectual property issues needed to maintain a competitive lead in the powered parafoil area. The combination of intellectual property strategy with disruptive innovation theory, by the way, is one of the key topics we cover in the forthcoming book, Conquering Innovation Fatigue by Jeff Lindsay, Cheryl Perkins, and Mukund Karanjikar (John Wiley & Sons, July 2009), with some related information about to be posted on the new website, InnovationFatigue.com. Once the innovation can get a foothold, then the normal process of sustaining innovation can kick in, allowing generation after generation to add advances in diesel motor design, materials, lighting systems, communications, control systems, etc., to add improved features, speed, power, control, and so forth.

While seizing a new market, this vehicle could also make inroads into the helicopter business, allowing low-end users and non-users to gain some of the lower-end benefits of helicopters for aerial surveillance and short trips when roads are inadequate.

The car is likely to appeal to aviators and hobbyists already familiar with paramotors, but if the regulatory environment can be properly managed (one of the areas of innovation fatigue also discussed in the book), this could have the potential to spread to a surprisingly large market. One could see this becoming an indispensible tool in regions where roads are unreliable (much of Africa, for example), giving business leaders, civic leaders, relief workers, hunters, and others the opportunity to travel or survey areas from the area. Interesting air taxi business models could also be envisioned. Stay tuned to see if this innovation takes off!

Saying "No" to Innovation? Sometimes that Is the Right Answer

In a New Product Development discussion group at LinkedIn.com, Monika Wingate called our attention to the story, "Post Shredded Wheat Celebrates Non-Innovation." Ogilvy is emphasizing the original, unchanging nature of Shredded Wheat as a virtue that stands out in this era of constant change and questionable innovation:

A new campaign from Post Shredded Wheat promotes the product's lack of change as a virtue, turning the trend toward enhanced, "super ingredient" food and beverage products on its head.

Developed by Ogilvy, the campaign with the tagline "We Put the 'No' in Innovation" emphasizes that the cereal has been made with "one simple, honest ingredient" -- 100% natural whole grain wheat, since it was created 117 years ago.

"There's been a marked change in American values, with a greater desire for honesty, trustworthiness and security during a time of economic and societal uncertainly," Kelley Peters, director of integrated insights and strategy for Post Foods, tells Marketing Daily. "Post's marketing messages underscore that Shredded Wheat has always been a simple, honest brand, and one of the healthiest foods on the grocery shelf."

There is a lesson here. Innovation is not always the answer. Change is not always desirable. When things are working and needs are already being met properly, innovation can be harmful. When it comes to financial services, we've seen some recent innovations can be disastrous.

Sometimes what is hailed as innovation is a return to failed systems and products of the past. Innovation by doing away with Constitutional checks and balances, for example, can lead to the old failures of tyranny. Innovation in monetary policy can lead to the age-old failures of debased currency. Innovations in the arts sometimes bring hideous results. And some innovations in health care and other areas bring unexpected dangers that take time to explore and understand (though the delays arguably have become excessive and bring the risk of blocking life-saving innovations - the risks of delay need to be more carefully weighted, in my opinion).

Change comes at a price. There are risks to be weighed against touted benefits. When things work and work well, as Ogilvy wishes to remind us, why introduce change?

Personally, I like Shredded Wheat and am glad that it and a few other products have stayed relatively constant over the years. These are unusual exceptions.

Your Future in Print: The Evolving World of Printed Electronics

Printing is an often overlooked area when people think of high tech, but some of the highest technology is found there. I'm not just talking about all the excitement from advances in digital printing or flexographic printing, for example. I'm talking about the world of electronics coming to printing. The opportunities started to come into view many years ago when conductive inks were developed for simple structures such as antennas for RFID tags or other electronic article surveillance (EAS) applications. Then conductive polymers were developed which led some companies to explore other variations of printed electronics or electronics integral with packaging. Transistors were printed and demonstrated, but there were limits to what could be achieved with conductive polymers and inks. Many tried printed electronics, but face painful barriers. Matching the opportunities afforded by silicon just seemed out of reach.

Now comes printed circuits made of - you guessed it (wait, did you??) - silicon itself. Read "With New Silicon-based Inks, Kovio Is Poised to Make Gins in Printed Electronics" and read their press release announcing the world's first RFID system with silicon-based inks.

Friends of mine in the RFID world say Kovio's technology is fascinating. Hats off to the Kovio team for some added excitement in the world of printing. Let's stay tuned to see where this technology and competitive technologies go.

When Internal Communication is Poor, IP Value Can Tumble

Over at the IP Asset Maximizer Blog, guest blogger Scott Garrison provides a dramatic story of wasted IP within a large corporation. Basically, after spending a large sum of money for IP in a breakthrough area, a major corporation took a series of missteps that eroded much of the value of the acquired patents. Ultimately, they had to give royalty-free licenses for the technology. The disaster came as a result of multiple parties taking independent steps without communicating with each other, and without central oversight and strategy. Garrison wisely suggests that a Chief IP Officer would have helped.

In addition, our experience suggests that when there is a moribund lack of communication between entities that ought to be communicating, there may be cultural and other issues that also need to be corrected. Sometimes fixing the org chart by adding central oversight isn't enough. We have found that Value Network Analysis can be an extremely useful tool in mapping out the exchanges of intangibles (knowledge, tips, informal communication, relationships, trust, loyalty, etc.) as well as tangibles (required reports, funds, formalized exchanges) that define the ecosystem -- in this case, the internal ecosystem. When healthy networks of intangible exchanges do not exist between parties such as business units and legal departments, steps must be taken to nurture the ecosystem and to help create stronger ties, better information exchange, and alignment of objectives and goals. When the ecosystem becomes healthy, a lot of things happen that make the corporation look a lot smarter than it used to be.

Patent Agents and Attorney Client Privilege

Patent agents (I'm one) sometimes wonder if the work they do for clients can have the benefit of attorney-client privilege to reduce the threat of discovery should there be subsequent litigation. Is there, in effect, a "patent agent-client privilege"?

Maybe, but maybe not, depending on the views of the court in questions. A good explanation is given by Michael Edward McCabe, Jr. in his article, "ATTORNEY-CLIENT PRIVILEGE AND WORK PRODUCT IMMUNITY IN PATENT LITIGATION." Here is an excerpt, with references and footnotes omitted (see the original for some important quoted material):

[C] Communications With Patent Agents

Apart from the issue of whether the substance of a particular communication qualifies as privileged is whether the persons involved in the communication can create a privilege. The attorney-client privilege applies to communications between the attorney and client. The issue often arises in patent cases as to whether the privilege extends to communications with a U.S. patent agent. Is there a “U.S. patent agent-client” privilege? An even more complex privilege issue involves the privileged status of communications with foreign (i.e. non-U.S.) patent agents. The cases are not uniform in their treatment of whether communications with patent agents (either domestic or foreign) are privileged.

[1] U.S. Patent Agents
[a] Courts Not Recognizing Privilege

The greater weight of authority strictly, and literally, interpret the “attorney” prong of the attorney-client communication requirement. Those courts reason that because a U.S. patent agent is not a member of the bar of any court, communications between a patent agent and their client are not privileged. Although a patent agent may not be able to create or receive a privileged communications in his own right by virtue of his status, their communications could still be privileged if the agent is acting under the supervision and control of an attorney. In this respect, the U.S. patent agent is treated like any other non-attorney who advises and assists counsel and acts under their supervision and control.

[b]Courts Recognizing Privilege
In the other camp are those district courts that do recognize a form of attorney-client privilege for patent agents, notwithstanding the fact that the agent is not a member of the bar of any court. The rationale behind extending the attorney-client privilege to patent agents is that, as held by the United States Supreme Court, “[t]he preparation and prosecution of patent applications for others constitutes the practice of law.” . . .

In light of the Supreme Court’s recognition that patent agents are authorized to practice law, some courts have reasoned that the recognition of a “patent agent privilege” is simply a logical extension of the Sperry decision. . . . [The author cites a passage from In re Ampicillin Antitrust Litigation.]

Still, it is important to recognize that not all courts agree that the Sperry decision—which was not a case about whether a patent agent enjoys a form of attorney-client privilege—should be read so broadly as to imply a patent agent-client privilege. Thus, it remains an open issue as to whether a U.S. patent agent privilege exists, with cases going both ways on the question.

To the extent that privilege may exist for a patent agent, McCabe explains that it would be limited strictly to "encompass only those services that such agents are legally licensed to perform: i.e., representation in preparing and prosecuting patent applications before the PTO."

Whether you think privilege applies or not, it's wise to always be careful in written communications, email included, recognizing that every word you write may be scrutinized and used against you by a hostile opponent. Save the sensitive, heavy and unpleasant stuff for verbal conversations!

Flip Video Acquired by Cisco: Disruptive Innovation at Work

When I first saw and then purchased a Flip video camera in 2007, I knew I was experiencing a classic example of disruptive innovation. Instead of adding more bells and whistles to impress high-end users of video cameras, Flip took a minimalist approach by understanding what non-users of expensive video cameras really wanted to do, and then doing just that. Simple, easy video making for YouTube and for display on computers was the real goal. Make it easy, convenient, and inexpensive, and millions will benefit. Forget cables and complex interfaces. Just turn the camera on, record some video, and then snap it into the USB drive of your computer. Easily convert the video into a YouTube entry and you're good to go.

Pure Digital's experiment with disruptive innovation has paid off handsomely. This week it was announced that Cisco is purchasing the company, apparently to support its mission of expanding videoconferencing services. Interesting move - and great news for Pure Digital (well, for the owners of Pure Digital - not necessarily the employees). Can Cisco maintain the benefits of the Flip camera and maintain or strengthen the disruptive advantages? Remains to be seen.

Innovation to Help People in Emerging Nations

I love stories of innovation that are driven by a desire to lift others. An example we discuss in the forthcoming book, Conquering Innovation Fatigue, is Empower Playgrounds, the innovative non-profit organization of retired chemical engineer Ben Markham. They develop new ways to advance education in Africa by turning playground equipment into power generators that can charge LED lamps to allow students to study after dark. Marvelous!

Another recent example is Sustainable Health Enterprises (SHE), an organization working to develop market-based solutions to provide low-cost feminine care products to women in emerging nations. Wonderful concepts!

The work of Anil Gupta in India also inspired me. He's reaching out to find innovators in the villages of India who may have marketable products. It's bringing hope to many. See Sristi.org for details.

What are your favorite examples of innovation efforts to life those in emerging nations?

Tate & Lyle Lessons: Is Your Patent Enforceable? Are Your Methods Detectable?

Sarah Hill's "Patent Debate Rumbles on after Tate & Lyle Sucralose Ruling" reminds us of the many pitfalls that inventors and patent holders face. While sucralose the molecule has been around for a while, the methods for efficiently making commercial grade sucralose are much newer and are the subject of patents by British giant Tate and Lyle. The problem with process patents - such as Tate and Lyle's patents on the method of making sucralose - is that they are often difficult to enforce. Competitors may be tempted to infringe in secret and sell in public, claiming that a different process was used. That's what happened with Tate & Lyle. Chinese companies produced a similar product but claimed they were using a novel process they invented. Lacking any published IP to show that they had conducted their own R&D and invented their own techniques, the Chinese company, according to Tate & Lyle, more likely was simply copying T&L's patent. But the Chinese company prevailed by claiming it was a new process protected as a trade secret.

Chemists knows that a different process can mean different trace amounts of byproducts, but the chemical fingerprint of products made within the scope of the claimed invention is often overlooked when patents are filed, and perhaps even when litigated. It can be quite expensive to do chemical forensics to link a process to a particular method when there may be many possibilities to consider. I suspect that the most cost-effective time to consider chemical fingerprints as indicators of infringement is when the experimental work is being conducted that leads to the patent.

The inventors and the R&D team should be concerned with enforceability and detection, and the issues should be covered as part of their training in your company or university, so they can consider ways to build in additional enforceability in the patent. For example, if the method to be claimed will generally result in trace amounts of zinc in the product, then mention that and include some product-by-process claims (e.g., a sweetener solution made according to Claim 1, having at least 5 ppm zinc). Such information and claims could strengthen the position of the patent holder. Whether that helps or not depends on the details of the process and the uniqueness of the chemical composition, but it's something the inventors should be thinking about as they do experimental work and especially as they begin preparing for a ptent. Is the patent enforceable? Is there anything unique about the process that will show up in the properties of the final product? Any tell-tale signs of potential infringement that we can build into the patent? Put it in the patent itself. With opportunities for detection of infringement built into the patent, it can help deter deliberate infringers and increase your odds of success.

Maybe just signaling that you've considered chemical forensics in creating your process will help deter copyists.

The Cosmic Org Chart Is Broken: Dark Energy, Dark Matter, and the Analogy to Intangibles in Business Ecosystems

In the past decade or so, scientists have been astounded to discover that the universe that we can see represents only a tiny fraction of the matter and energy that governs the cosmos. Based on the motion of stars and galaxies, strange "dark matter" must be present, increasing the gravitational tug on celestial bodies more than can be accounted for by visible matter. Further, based on the surprising discovered that the universe is expanding, not contracting under its own gravitational pull as expected, scientists have proposed that a strange, repulsive "dark energy" fills the cosmos countering gravity. The combined effect of these unseen entities, dark energy and dark matter, are so great, that they account for 96% of the matter and energy of the universe. In other words, the visible universe that we used to think is all there is actually is only a tiny fraction of what is there. What we see in the "cosmic org chart" accounts for only 4% of what really influences the cosmos.

It's that way in the business world. too. Companies can create tidy org charts and draft neat process maps to describe how they work, but the unseen reality outside the visible systems may be what really dominates operations. Increasingly, experts in knowledge management are learning that easily overlooked and often invisible intangibles can dominate corporate value and performance. Numerous intangible transactions may be essential to the success of a company, including casual information sharing between trusted friends, helpful exchanges of tips and best practices between employees or between external partners and internal employees, or loyalty that is gained when people are included in decision making. The invisible linkages and hard-to-observe exchanges in a company's internal an external ecosystems may be the real engines of value creation, regardless of what is on a process map or workstream. By not understanding the value of such intangibles, corporations can easily break key linkages and crush subtle engines of value creation.

Many companies focus on their "value chains" - a term popularized by Michael Porter in his seminal 1985 work, Competitive Advantage. The value chain describes the linear chain of events as materials and products move from sourcing through manufacturing and out to the market. It is a highly useful paradigm for manufacturing and was highly applicable to much of the economy in the era when Porter was doing his research. But since that time, the explosion of the knowledge economy has changed the way we work and create value. One of my favorite authors, Verna Allee, a revolutionary expert in knowledge management, has detailed the move from the value chain to modern ecosystems and Value Networks in her book, The Future of Knowledge: Increasing Prosperity through Value Networks (Burlington, MA: Elsevier Science, 2003). Verna Allee and Associates have introduced a clever, methodical tool called Value Network Analysis for analyzing and visualizing the transactions of intangibles and tangibles that affect a business.

After my training in Value Network Analysis by Verna and her associate, Oliver Schwabe, an exciting new perspective on business and human behavior opened up. I have been highly impressed with the power of Value Network Analysis and the insights that it can rapidly deliver for a company. The Value Network Analysis work that Innovationedge has done as part of larger projects for some of our clients has been a very exciting part of my work since joining Cheryl Perkins' exciting company. We value the tool enough that we had Verna Allee speak at the 2008 CoDev conference to introduce other business leaders to the basic concepts behind Value Network Analysis. I'm very pleased to see a community emerging of people using Value Network Analysis and developing exciting tools for it.

Here are some resources that you may find helpful in further exploring this area:

• Value-Networks.com


• Hosted Value Network Tools


• A Value Network Approach (PDF) - 2002 Whitepaper by Verna Allee


• ValueNet Works™ Analysis for the Discovery of Viagra (PDF)

Part of the initial output in Value Network Analysis are maps, called "holomaps," showing human entities as nodes and transactions of tangible or intangible items between them. There is much that can be learned from such holomaps - a topic for later discussion. For now I'll show you two sample holomaps I created to illustrate simple ecosystems. One shows several external nodes around a manufacturer and the other shows some structure within part of a corporation. For simplicity, the maps lack all the labels explaining the transactions. (Click to enlarge.)





One interesting approach is to use the "holomaps" you get in Value Network Analysis as tools for "what if" scenarios to explore what new partners might do for your business model, or what new business models might do for your ecosystem. Using holomaps to explore innovation ecosystems is a particularly fruitful approach for those doing open innovation and wondering who should be in their external ecosystem.

We have further information on this topic that we'd be happy to share with you. It's certainly something you should look at to understand how business really works.